Archive for July, 2010

Ok, its been over a week since the “seminal” In re Bilski decision, and the reality is slowly sinking in: crazy Aunt Benson (Gottschalk v. Benson) and crazy Aunt Flook (Parker v. Flook) are out of the basement and back at the dinner table! Yes, these decisions, which many patent attorneys had hoped would fade in importance against more recent and better reasoned opinions, are now front and center again. Cited approvingly as “guideposts” for determining what is and isn’t statutory subject matter under Section 101, the Court again invites us to follow the principles set forth in these decisions in separating the unpatentable from the patentable under Section 101.

The only problem is that I have never been able to fully grasp or follow the logic used in these cases. Today I will take a look at claim 8 in the Benson case:

“The method of converting signals from binary coded decimal form into binary which comprises the steps of

(2) shifting the signals to the right by at least three places, until there is a binary `1′ in the second position of said register,

(3) masking out said binary `1′ in said second position of said register,

(4) adding a binary `1′ to the first position of said register,

(5) shifting the signals to the left by two positions,

(6) adding a `1′ to said first position, and

(7) shifting the signals to the right by at least three positions in preparation for a succeeding binary `1′ in the second position of said register.”

It’s unquestionable that Benson’s claim 8 passes the the machine or transformation (MOT) test, as the claim clearly requires the use of a machine (a reentrant shift register) to convert signals from binary coded decimal form into binary form. Furthermore, it is clearly a “process” under the broad definition given to that category of Section 101 subject matter in Bilski. The Benson Court killed it, however, because “[t]he mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.”

And this is where I struggle with the logic for a number of reasons:

1. Why should it matter that the only known practical use of the process is on a digital computer? The process of claim 8, as limited to implementation in a digital computer, was an improvement to the data processing arts and did not block the use of BCD on computers to represent data, or even conversion between BCD and binary on a computer by other processes.

2. If the process itself was invented to improve the utility of a digital computer — indeed a very specific type of machine, why should the improvement be unpatentable because its only known practical use is on that very specific type of machine?

3. If the objectionable algorithm had been in use for a thousand years to solve a multitude of problems with paper and pencil before its application to a digital computer was discovered, would it make a difference? Or, put another way, if there was only one digital computer in the world, but one-hundred paper and pencil uses for the algorithm in question, would it then be acceptable to patent the process as restricted to the computer?

4. If the machine claimed in Benson was a mechanical device for performing the process of conversion, would that be patentable because it was “impractical” compared to a digital computer? If the mechanical device was the only known “computer” at the time the process was invented, would this device be preempted as it was the only practical machine for implementing the process?

5. If Benson had invented the computer itself, and sought to claim the process for conversion of BCD to binary contemporaneously therewith, would the claim be allowable because the machine itself was novel?

6. If other techniques for converting binary coded decimal to binary signals existed, then would a patent on the algorithm truly preempt conversion of binary coded decimal to binary in a digital computer? Wouldn’t this merely be preemption of one machine-process for doing the conversion?

I think it is clear that the “preemption” rule enunciated in Benson is at the very least is highly dependent on assumptions about the technological environment “external” to the invention, making it a slippery concept to apply with any degree of consistency, and indeed a rule that potentially gives different results at different points in the timeline of the technological environment.

In one of my next postings I will try to decipher (or not) how the application of a mathematical algorithm to the rubber curing apparatus/process in Diamond v. Diehr was different than the application of the mathematical algorithms in Flook and Benson, such that the former did not wholly preempt all practical uses of the algorithm but the latter did.